Douglas A. Miro (dmiro@ostrolenk.

com)
Alan Federbush (afederbush@ostrolenk.com)
Ariel S. Peikes (apeikes@ostrolenk.com)
Ostrolenk Faber, LLP
1180 Avenue of the Americas
New York, NY 10036
(212) 382-0700

Attorneys for Plaintiff, Creative Kids Far East, Inc.

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

)
CREATIVE KIDS FAR EAST, INC., )
)
Plaintiff, )
) Civil Action No. 17-cv-2871
v. )
)
RMS INTERNATIONAL USA, INC. )
) JURY TRIAL DEMANDED
Defendant. )
)
)

COMPLAINT

CREATIVE KIDS FAR EAST, INC. (Creative Kids), by and through its attorneys, for

its Complaint against Defendant, RMS INTERNATIONAL USA, INC. (RMS), alleges as

follows.

INTRODUCTION

1. This is an action for trade dress infringement, deceptive acts and practices, unfair

competition, and related claims against Defendant RMS for its product packaging that mimics

the inherently distinctive and well-known packaging of two products offered by Creative Kids.

RMS has introduced two new products with product packagings that deliberately mimic unique

elements of trade dresses of Creative Kids. Because the new product packagings from RMS will

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inevitably confuse consumers, if they have not already, Creative Kids has no choice except to

seek injunctive relief against the further distribution of the deceptively designed product

packagings.

2. For the last several years, Creative Kids and RMS have competed directly in arts

and crafts products, hobby kits, games, and other products for children. Over this period, due to

the quality of Creative Kids products, their designs, and the design of Creative Kids product

packaging, Creative Kids sales have been increasing. In an apparent reaction to the strong sales

of Creative Kids products, rather than develop its own innovative products, designs or

marketing strategy, RMS has decided instead to mimic the inherently distinctive trade dresses of

two of Creative Kids products. In doing so, RMS seeks to usurp Creative Kids hard-earned

goodwill by confusing the consuming public and the trade into purchasing RMS copycat

products.

THE PARTIES

3. Plaintiff CREATIVE KIDS FAR EAST, INC., is a corporation organized and

existing under the laws of the State of New York, having a place of business at 382 Route 59,

Monsey, NY 10952.

4. Defendant, RMS INTERNATIONAL USA, INC., is a corporation organized and

existing under the laws of the State of Florida, with a place of business at 8323 NW 12 Street,

Suite 111, Miami, FL 33216.

JURISDICTION AND VENUE

5. This Court has original jurisdiction over the subject matter of this action pursuant

to 15 U.S.C. 1121 and 28 U.S.C 1331 and 1338, and has supplemental jurisdiction pursuant

to 28 U.S.C 1367(a).

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 6. This Court has personal jurisdiction over RMS by reason of its regular transaction

of business in this Judicial District and in the State of New York, and its commission of the

tortious acts within the State of New York and this Judicial District that have had, and continue

to have, injurious effects on Creative Kids in this Judicial District.

7. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) because

this is an action brought pursuant to the federal trademark laws, 15 U.S.C. 1051 et seq.,

Defendant conducts business in this Judicial District, and a substantial part of the events giving

rise to the claims occurred in this District.

FACTS

A. Creative Kids Distinctive and Nonfunctional Trade Dress in its Crystal Growing
Kit Product Packaging

8. Creative Kids has long offered its Crystal Growing kit line of products to

consumers in the United States. The line of products has been offered at TOYS R US stores, as

well as through other retailers across the United States, and has met with significant success

amongst consumers and the trade.

9. Below is a picture showing the Creative Kids Crystal Growing kit product

packaging:

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 10. The Crystal Growing Kit Product Packaging Trade Dress (hereafter, Crystal

Growing Trade Dress) is inherently distinctive and consists of: (1) a unique depiction of

irregular, protruding shapes at the top of the product packaging resulting in a jagged upper edge

of the packaging; (2) a transparent front panel with an arbitrary bulbous shape revealing a unique

placement and arrangement of a wooden stick placed vertically, and two rocks alongside the

wooden stick; (3) an image near the center of the product packaging showing fully-grown

crystals, and; (4) the designation Crystal Growing shown near the top of the product packaging

with a border outline in a contrasting color.

11. Creative Kids has offered for sale and distributed product bearing the Crystal

Growing Trade Dress since at least as early as 2014.

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 12. Resulting from Creative Kids consistent use of the Crystal Growing Trade Dress,

the product packaging trade dress has become well-known to consumers and to the trade, such

that they recognize Creative Kids as the source of the product.

13. The above-described combination of elements in the Crystal Growing Trade

Dress is non-functional. Countless alternative designs exist to competitors for creating their own

product packaging for competing products.

B. RMS Infringement of the Crystal Growing Trade Dress

14. RMS, instead of devising its own non-imitative packaging, has imported,

advertised, offered, and/or sold a product called Crystal Growing Kit in this district, which has

all of the elements of the Crystal Growing Trade Dress. Set forth below are the Creative Kids

product packaging and the RMS product packaging, shown side-by-side:

15. The RMS product packaging (shown above, at right) incorporates all of the

elements of the Crystal Growing Trade Dress: (1) a depictions of irregular, protruding shapes

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showing crystals, which is similar to the depiction of such elements set forth in the Crystal

Growing Trade Dress and that is at the top of the product packaging, resulting in a jagged upper

edge of the product packaging as is set forth in the Crystal Growing Trade Dress; (2) a

transparent front panel with an arbitrary bulbous shape, similar to the Crystal Growing Trade

Dress, which reveals the same placement and arrangement of a wooden stick placed vertically,

and two rocks alongside the wooden stick, as set forth in the Crystal Growing Trade Dress; (3)

an image showing fully grown crystals at the same location, near the center of the product

packaging, as set forth in the Crystal Growing Trade Dress, and; (4) the designation Crystal

Growing Kit shown near the top of the product packaging and with a border outline in a

contrasting color, as set forth in the Crystal Growing Trade Dress.

16. RMS has intentionally and slavishly copied virtually every detail of Creative

Kids product packaging for the purpose of confusing consumers and the trade, and in order to

usurp the business and goodwill of Creative Kids. In furtherance of its efforts to cause consumer

confusion and to best capitalize on the goodwill associated with the Creative Kids Crystal

Growing Trade Dress, RMS has placed its competing product with imitative product packaging

into TOYS R US stores. As noted above, Creative Kids has been offering its Crystal Growing

kit at TOYS R US stores for several years.

17. Upon learning of RMS imitative product packaging, Creative Kids wrote to RMS

and demanded that RMS cease and desist from using the Crystal Growing Trade Dress on its

competing products.

C. Creative Kids Distinctive and Nonfunctional Trade Dress in its Velvet Bonanza
Product-Line

18. Creative Kids offers for sale an arts and crafts kit product-line called Velvet

Bonanza for several years. The Velvet Bonanza kits consist of arts and crafts supplies packaged

together for young children that contain: (i) colored markers; (ii) glitter-glue; (iii) colorful

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stickers in the shapes of hearts, stars, flowers, and circles, and; (iv) colorful sequins. The kits

also contain textured black and white surfaces for coloring and other decoration. Creative Kids

Velvet Bonanza kits have always included: (i) a do-not-disturb door hanger, and (ii) a texture-

covered notepad connected by a colorful, pink spiral binding.

19. Velvet Bonanza craft kits are packaged in inherently distinctive product

packaging, and the product packaging has also has become well-known to consumers and to the

trade. The Velvet Bonanza kits have been offered at Big Lots stores, as well as through other

retailers across the United States and have met with significant success amongst consumers and

the trade.

20. Examples of the Velvet Bonanza product packaging are shown below:

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{02066448.1} 8
 21. The inherently distinctive Velvet Bonanza Product Packaging Trade Dress

(hereafter, the Velvet Bonanza Trade Dress) consists of: (1) a rectangular box with a clear

cellophane window at the center of the box with unique, irregularly shaped borders; (2) a

depiction of a multi-colored rainbow that runs behind the product name, at the top-left corner of

the box; (3) the product name within a border in a contrasting color at the top left corner of the

box; (4) a unique placement and arrangement of multi-colored markers, two units of colorful

glitter-glue, a black and white notepad with pink spiral binding, and a black and white door

hanger, and; (5) a unique series of vertically stacked and arranged and slightly askewed images

on the left and right borders of the box. Creative Kids has offered for sale and distributed

product bearing the Velvet Bonanza Trade Dress since at least as early as 2012.

22. The Velvet Bonanza Trade Dress has become well-known to consumers and to

the trade, allowing them to recognize Creative Kids as the source of the product.

23. The above-described combination of elements in the Velvet Bonanza Trade Dress

is non-functional. Countless alternative designs exist to competitors for creating their own

product packaging for competing products. The juxtaposition of the various elements and images

need not be the same, without impacting the use, purpose, cost or quality of the product, and

without putting Creative Kids competitors at a significant non-reputation-related disadvantage.

D. RMS Infringement of the Velvet Bonanza Trade Dress

24. Upon information and belief, RMS has imported, advertised, offered, and/or sold

a product called Ultimate Velvet Art in this Judicial District. Defendants new Ultimate Velvet

Art product copies all aspects of the Creative Kids Velvet Bonanza Trade Dress. Here is a

picture showing Defendants imitative product packaging:

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 25. The Creative Kids Velvet Bonanza and the RMS Ultimate Velvet Art product

packagings are shown next to each other here:

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 26. It is clear that numerous design elements, including all of the trade dress

elements, have been copied by Defendant from the Creative Kids Velvet Bonanza kits product

packaging. RMS copycat product packaging includes: (1) a rectangular box with a clear

cellophane window at the same center location of the box and with similar irregularly shaped

borders as those shown in the Velvet Bonanza Trade Dress; (2) a multi-colored depiction of the

product name forming the impression of a rainbow at the same top-left corner of the box location

as the rainbow depicted in the Velvet Bonanza Trade Dress; (3) the product name with a border

outline in a contrasting color at the same top-left corner of the box, as set forth in the Velvet

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Bonanza Trade Dress; (4) the same placement and arrangement of multi-colored markers, two

units of colorful glitter-glue, a black and white notepad with pink spiral binding, and a black and

white door hanger, as set forth in the Velvet Bonanza Trade Dress, and (5) a similar series of

vertically stacked and arranged and slightly askewed images stacked on the same left and right

borders of the box location, as set forth in the Velvet Bonanza Trade Dress.

27. RMS has intentionally and slavishly copied Creative Kids product packaging for

the purpose of confusing consumers and the trade, and in order to usurp from Creative Kids its

business and goodwill.

28. Also in furtherance of its efforts to cause consumer confusion and capitalize on

the goodwill associated with Creative Kids trade dress, RMS has placed its competing, imitative

product and product packaging into Big Lots stores. As noted above, Creative Kids has been

offering its Velvet Bonanza kits at Big Lots stores for several years.

29. Upon learning of RMS imitative product packaging, Creative Kids wrote to RMS

and demanded that RMS cease and desist from using the Velvet Bonanza Trade Dress on its

competing products.

COUNT ONE

Trade Dress Infringement of the Creative Kids Crystal Growing Trade Dress
(15 U.S.C. 1125(a))

30. Creative Kids repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

31. The Crystal Growing Trade Dress is used in commerce, is not functional, is

inherently distinctive, and has acquired secondary meaning in the marketplace.

32. The RMS Crystal Growing Kit product features a product packaging design that is

confusingly similar to Creative Kids Crystal Growing Trade Dress, and Defendants

manufacture, distribution, sale and promotion of the infringing Crystal Growing Kit is likely to

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cause confusion and mistake and to deceive customers as to the source, origin or sponsorship of

their products.

33. Upon information and belief, Defendant chose to use the infringing product

packaging design with actual knowledge of Plaintiffs prior use of and rights in the distinctive

and well-known Crystal Growing Trade Dress. Upon information and belief, Defendant markets

and sells its infringing design in commerce with the intent to cause confusion, to cause mistake,

or to deceive.

34. Defendants actions constitute willful trade dress infringement in violation of

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

35. Defendants conduct has caused and is causing irreparable injury to Plaintiff.

COUNT TWO

Trade Dress Infringement of the Creative Kids Velvet Bonanza Trade Dress
(15 U.S.C. 1125(a))

36. Creative Kids repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

37. The Velvet Bonanza Trade Dress is used in commerce, is not functional, is

inherently distinctive, and has acquired secondary meaning in the marketplace.

38. Defendants Ultimate Velvet Art kit, which upon information and belief, is being

used in commerce, features a design that is confusingly similar to the Creative Kids Velvet

Bonanza Trade Dress, and Defendants manufacture, distribution, sale and/or promotion of the

infringing packaging design is likely to cause confusion and mistake and to deceive customers as

to the source, origin or sponsorship of their products.

39. Upon information and belief, Defendant chose to use the infringing product

packaging design with actual knowledge of Plaintiffs prior use of and rights in the distinctive

and well-known Velvet Bonanza Trade Dress. Upon information and belief, Defendant markets

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and sells its infringing design in commerce with the intent to cause confusion, to cause mistake,

or to deceive.

40. Defendants actions constitute willful trade dress infringement in violation of

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

41. Defendants conduct has caused and is causing irreparable injury to Plaintiff.

COUNT THREE

Unfair Competition (15 U.S.C. 1125(a))

42. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

43. Defendants use of the Creative Kids Crystal Growing Trade Dress and Velvet

Bonanza Trade Dress in connection with its infringing product packaging constitutes false

designation of origin and false representations as to the origin of Defendants goods, is likely to

cause confusion, mistake, or deception as to the source of Defendants goods, and is likely to

create the false impression that Defendants goods are authorized, sponsored, endorsed, licensed

by, or affiliated with Creative Kids.

44. Upon information and belief, Defendant chose to copy the designs of Creative

Kids Crystal Growing Trade Dress and Velvet Bonanza Trade Dress for its copycat products, the

Crystal Growing Kit and Ultimate Velvet Art products, with actual knowledge of Plaintiffs prior

use of and rights in the Crystal Growing Trade Dress and Velvet Bonanza Trade Dress. Upon

information and belief, Defendant has used its infringing product packagings in commerce with

the intent to cause confusion, to cause mistake, or to deceive consumers and the trade.

45. Defendants actions constitute unfair competition in violation of Section 43(a) of

the Lanham Act, 15 U.S.C 1125(a).

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 COUNT FOUR

Trade Dress Infringement Under New York Law (N.Y. Gen. Bus. Law 360-k)

46. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

47. Defendants acts, as described above, constitute trade dress infringement under

N.Y. Gen. Bus. Law 360-k.

COUNT FIVE

Unfair Competition Under New York Law (N.Y. Gen. Bus. Law 360-o)

48. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

49. The acts of Defendant, as described above, constitute unfair competition in

violation of Creative Kids rights under the New York State common law, as preserved under

N.Y. Gen. Bus. Law 360-o.

COUNT SIX

Trade Dress Dilution Under New York Law (N.Y. Gen. Bus. Law 360-l)

50. Plaintiff repeats and realleges each and every allegation in the foregoing

paragraphs as if fully set forth herein.

51. The product packaging trade dresses of Creative Kids are used in commerce, are

non-functional, inherently distinctive and have acquired secondary meaning amongst consumers

and the trade.

52. RMS distribution, sale and promotion of products employing the asserted

Creative Kids product packaging trade dresses is likely to dilute and detract from the

distinctiveness of the Creative Kids trade dresses.

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 53. RMS acts of trade dress dilution, unless restrained, will cause great and

irreparable injury to Creative Kids and to the business and goodwill represented by the product

packaging trade dresses, in an amount that cannot be ascertained at this time, leaving Creative

Kids with no adequate remedy at law.

54. The acts of Defendant as described above constitute trade dress dilution in

violation of N.Y. Gen. Bus. Law 360-l.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays that a judgment be entered:

1. Enjoining and restraining Defendant, its officers, directors, agents, servants, employees,

representatives and all those persons in active concert or participation with it from:

a. using Plaintiffs Crystal Growing Trade Dress, Velvet Bonanza Trade Dress, or

any product packaging confusingly similar thereto;

b. manufacturing, distributing, shipping, advertising, promoting, selling or otherwise

offering for sale the trade dresses, or any product packaging design that is

confusingly similar to Plaintiffs Crystal Growing Trade Dress or Velvet Bonanza

Trade Dress;

c. representing, by any means whatsoever, that any products manufactured,

distributed, advertised, offered or sold by Defendant are the Creative Kids

products or vice versa, and from otherwise acting in a way likely to cause

confusion, mistake or deception on the part of purchasers or consumers as to the

origin or sponsorship of such products; and

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 2. Enjoining Defendant, its officers, directors, agents, servants, employees, representatives

and those persons in active concert or participation with Defendant from engaging in, or

knowingly contributing, assisting, inducing, aiding or abetting any other person or entity

in engaging in, any acts of unfair competition, false designation of origin and/or

deceptive trade practices in connection with the design, manufacture, sale, offer for sale,

distribution, installation or use of the trade dresses, or any product packaging

substantially similar thereto.

3. That Defendant deliver up for destruction all infringing products in its possession or

control and all means of making the same in accordance with 15 U.S.C. 1118.

4. That Defendant account to Creative Kids for its profits and any damages sustained by

Creative Kids, to the extent calculable, arising from the foregoing acts of trade dress

infringement and dilution, false designation of origin and deceptive acts and practices.

5. That Creative Kids be awarded judgment for three times such profits or damages

(whichever is greater), pursuant to 15 U.S.C. 1117 and N.Y. Gen Bus. Law 349(h).

6. That Plaintiff be awarded punitive damages pursuant to the law of the State of New York

in view of Defendants intentional and willful trade dress and trademark infringement and

other conduct.

7. Awarding to Plaintiff its reasonable attorneys fees.

8. Awarding to Plaintiff its taxable costs.

9. That Defendant be required to file with the Court and to serve on counsel for Creative

Kids, within thirty (30) days after entry of any injunction issued by the Court in this

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 action, a sworn written statement pursuant to 15 U.S.C. 1116(a) settling forth in detail

the manner and form in which Defendant has complied with any injunction which the

Court may enter in this action.

10. Granting Plaintiff such other and further relief as the Court may deem just and proper.

JURY DEMAND

Plaintiff seeks a jury trial on all claims as to which a jury trial may be had.

Dated: New York, New York

April 20, 2017 Respectfully submitted,

s/Douglas A. Miro
Douglas A. Miro
dmiro@ostrolenk.com
Alan Federbush
afederbush@ostrolenk.com
Ariel S. Peikes
apeikes@ostrolenk.com
OSTROLENK FABER LLP
1180 Avenue of the Americas
New York, NY 10036
Tel: (212) 382-0700
Fax: (212) 382-0888

Attorneys for Defendants

Creative Kids Far East, Inc.

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